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District Court Denies Motion to Compel Inadvertently Produced Privileged Documents

In this patent infringement action, Teva inadvertently produced documents to Sunovion. Teva subsequently attempted to claw back the documents under the parties’ protective order. Sunovion moved to compel the inadvertently produced documents.

In analyzing the motion to compel, the district court noted that it had “reviewed the parties’ submissions, the Discovery Confidentiality Order (DCO), and, in particular, paragraphs 28 and 30 of the DCO.” The district court further noted that “[t]hese paragraphs are applicable to the instant matter insofar as they refer to notice ‘promptly after its discovery’ and ‘prompt remedial action’ in the event of an inadvertent disclosure.”

The district court further explained that “Teva substantially completed its document production on September 1, 2016, discovered the inadvertent release of documents on September 27, 2016 and, on October 21, 2016, provided notice of the inadvertent production of documents in compliance with paragraph 30 of the DCO.”

As a result, the district court determined that Teva acted promptly. “Based on Teva’s recitation of its reaction and diligence regarding the disclosure, there is no reason to believe this was not a good faith representation. The Court therefore finds that Teva properly acted in compliance with paragraph 30, i.e., promptly from the date of discovery of the inadvertent production.”

Sunovion also requested that Teva provide a description of: the contents of each document; the specific bases for each assertion of privilege; and a narrative describing the document review process. On this issue, the district court noted that “[s]ince Teva has provided Sunovion with its privilege logs for the clawed back documents, the outstanding issue is whether Teva should provide an explanation as to whether or not the producer ‘took reasonable steps to prevent disclosure’ as required by Fed. R. 502(b)(2).”

On this issue, the district court concluded that the DCO did not include language that required such an explanation. ” Because such language does not appear in the negotiated DCO, the Court therefore finds that Teva complied with the DCO and that the demand for an explanation is unsubstantiated. Furthermore, in conformance with paragraph 30 of the DCO, there is no waiver of privilege, nor prejudice to any claims thereto.”

Accordingly, the district court denied the motion to compel.

Sumitomo v. Emcure Pharm. LTD
., Case No. 2:15-cv-0280-SRC-CLW (D.N.J. Jan. 28, 2017)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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